Evidence : US PTO Litigation Alert™

APJs’ Accept Legal Expert’s Declaration Focused on Specific Dispute

Scott Daniels | April 7, 2014

Most judges are reluctant to permit expert testimony on the state of the law – they consider themselves to be perfectly capable of understanding and applying the law without such assistance.  This view is embodied in the Patent Office rules for inter partes review proceedings:   “[t]estimony on United States patent law or patent examination practice will not be admitted.”  37 C.F.R. § 42.65(a). 

The APJs recently indicated some flexibility on this point, however, in Amneal Pharmaceuticals v. Supernicus Pharmaceuticals (Paper 41, IPR2013-00368).  There, the Patent Owner filed an expert declaration of a former Patent Office official, explaining why certain documents at the Patent Office would not have been reasonably accessible to the public and therefore not prior art against the challenged claims. 

In a conference call, the Petitioner attacked the admissibility of the declaration.  The APJs disagreed, stating that the declaration “is not directed entirely to expert testimony on patent examination practice. Rather, the declaration testimony appears to tether the discussion of the relevant patent examination practice closely to the facts of this case for the purpose of providing context. The Board takes the view that the exhibit is not inadmissible under 37 C.F.R. § 42.65(a).”  (Emphasis added).

In a twist the APJs then invited the Petitioner to file a written motion to exclude the declaration.  So perhaps the last word on this issue has not yet been spoken.  Still, the message for practitioners is that expert testimony on legal issues is possible so long as it is limited to analysis of the specific facts in the case under consideration.  More general comments about the state of the law or Patent Office practice are likely to be excluded.

Presumption of Validity may not be Argued to the Jury

Scott Daniels | April 3, 2014

In infringement actions with a pending parallel reexamination or review of the patent-in-issue, it is customary for trial judges to prohibit an accused infringer from informing the jury that the patent is under reexamination or review at the Patent Office.  Almost uniformly, judges believe that such information about parallel activity at the Patent Office would confuse or unduly prejudice the jury.  In an in limine ruling this Monday, Judge Larry Hicks followed this customary approach, but then went a step further.  Server Technology, Inc. v. American Power Conversion Corporation (3:06-cv-00698 (D. Nev.)). 

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Trial Judge Permits Limited use of Reexamination Results before Jury

Scott Daniels and Cindy Chen | February 19, 2013

Most trial judges do not allow the parties in patent infringement trials to disclose the results of a reexamination proceeding to the jury.  Judges worry that the jury might misunderstand the meaning of the reexamination, causing unjustified prejudice to one party or the other.  In Syntrix Biosystems, Inc., v. Illumina, Inc., 2013 U.S. Dist. LEXIS 20270 (February 14, 2013), however, Judge Benjamin Settle of the Western District of Washington determined that certain aspects of an earlier reexamination of the patent-in-suit could be presented to the jury, for two limited purposes.  Interestingly, in both instances, the disclosure of the reexamination to the jury would help the patent owner, not the accused infringer.

First, Judge Settle found that the jury could be told that the prior art asserted by the accused infringer had already submitted to, and reviewed by, the Patent Office during the reexamination.  The Judge believed that confirmation of the patentability of the claims by the PTO during reexamination could rightfully enhance the statutory presumption that the claims are valid over the prior art considered in the reexamination.

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LG Suffers Setback at PTO Board in LCD Dispute with Chi Mei

Scott Daniels | July 11, 2012

The infringement action filed by LG Philips LCD against Chi Mei Optoelectronics and AU Optronics in Delaware is scheduled to go to trial at the beginning of November.  LG sued Chi Mei and AU in 2006 for infringement of four LCD patents, including U.S. Patent No. 6,815,321, claiming a method for forming a thin film resistor.  The resistors are used in laptops, monitors and television sets. 

In the meantime, however, a reexamination against the ‘321 has been winding its way through the Patent Office.  And this morning, the Patent Office Board of Appeals affirmed the examiner’s prior art rejections of certain ‘321 claims.  Essentially, the Board found that the various declarations filed by LG attacking the rejections failed to address the relevant disclosure of the references or lacked corroboration. 

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Judge Robinson Denies Preliminary Injunction Motion because of Reexamination

Scott Daniels | June 22, 2012

An accused infringer’s primary purpose in requesting reexamination of a patent is, obviously, to persuade the Patent Office to cancel the claims.  But there are other potential benefits from reexamination, apart from actual cancelation of the claims.  One such potential benefit is an argument against a motion for preliminary injunction.

Earlier this week, Judge Sue Robinson of Delaware ruled on the patentee’s request for preliminary injunction in ButamaxTM Advanced Biofuels v. Gevo, 2012 U.S. Dist. LEXIS 84608.  The patent owner Butamax had sued Gevo for infringement of a patent claiming a method for making isobutanol suitable as a biofuel, using recombinant microorganisms.  Eight months into the case, Butamax asked Judge Robinson for preliminary relief pending completion of the case. 

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Patent Invalidated in Court despite Earlier Success in Reexamination

Scott Daniels | December 13, 2011

It is an article of faith among patent litigators that a patent emerging successfully from reexamination is nearly impervious to a later validity attack in an infringement action in court.  Judge Robert Chatigny’s ruling last Friday in Jacobs Vehicle Equipment v. Pacific Diesel Brake, 2011 U.S. Dist. LEXIS 142228 (D. Conn.), however, shows that reexamined patents are not invulnerable.

 A competitor sued the patentee for a declaratory judgment that the patent was obvious over the prior art, this despite an earlier confirmation by the PTO in reexamination that the claims were patentable over the art without need of amendment.  After a lengthy trial, Judge Chatigny declared the patent invalid over the prior art.  The Judge acknowledged that his conclusion was “at odds” with that of the reexamination examiner, but asserted that he had a better opportunity than the examiner to consider the prior art.

 The record before me on issues relating to obviousness is far more complete than the one before the PTO. The ex parte reexamination interview lasted about forty-five minutes. The trial, which was more about invalidity than infringement, lasted several weeks. Nearly all the prior art was before the examiner. But he did not have the benefit of the extensive evidence and arguments submitted to me.

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Attacking Patents Already Adjudicated to be Valid

Scott Daniels | December 13, 2011

Readers might be interested in reading our thoughts on last Friday’s Construction Equipment case.  See our story posted by our good friend Gene Quinn on IPWatchdog.


Judge Robinson Allows Late Reliance on Reference

Scott Daniels | October 13, 2011

Reexamination provided an unexpected benefit to the accused infringer in Asahi Glass v. Guardian Industries in Delaware.  Last week Judge Sue Robinson allowed Guardian to rely upon a prior art reference at trial, even though the reference had not been timely identified or analyzed in the Guardian’s original expert report.  The reference had been used by the Japanese Patent Office in 2005 to reject claims in applications corresponding to the patents-in-suit – so Judge Robinson might have been justified in ruling that Guardian had ample opportunity to present the reference on a timely basis. 

The reference appears to have first come to the attention of the parties in July when it was applied by the examiner to reject the patents-in-suit in co-pending reexaminations.  Judge Robinson denied a request by Guardian to assert the reference in a summary judgment motion, but yielded on use of the reference at trial.  “Given the unusual circumstances of the surfacing of the Tani reference only recently during reexamination, its importance to the PTO as potential invalidating art, and the importance of giving the Federal Circuit as thorough a record as is practicable, the court will allow [Guardian] to present its obviousness theory based on the Tani reference at trial.”  The Judge’s only proviso was that Guardian’s expert be presented for a deposition on the new reference and that Asahi’s expert be permitted to submit a supplemental report on the new reference.

Guardian’s lawyer who suggested reexamination must be a hero now in that camp.  

Use of Reexamination Results in Parallel District Court Trials

Scott Daniels | September 14, 2011

The extent to which a litigant may use results from a parallel reexamination was a major issue in Monday’s decision by Magistrate Judge Joseph Spero in Volterra Semiconductor v. Primarion in the Northern District of California (2011 U.S. Dist. LEXIS 102295).  After a three-week trial in May, the jury determined that Defendant Primarion had infringed Plaintiff Volterra’s patent claims for certain “flip-chip” semiconductor structures.  Primarion then moved for judgment as a matter of law and for a new trial, asserting inter alia that Judge Spero had given inconsistent treatment to the results of a reexamination of the patent-in-suit. 

First, Primarion argued that Judge Spero had erred when he allowed Volterra to introduce at trial evidence of the PTO’s decision confirming the validity of the patents, but at the same time precluding Primarion from introducing evidence that the PTO had construed the asserted claims more narrowly than the Court did in its claim construction.

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Judge Randa Denies Preliminary Injunction Motion & Stays Case Pending Reexamination

Scott Daniels | July 12, 2011

In recent days, a number of writers in the blogosphere have remarked on the strength of reexamination as a defense for parties accused of patent infringement, some bemoaning that strength, others cheering it on.  The influence of reexamination on an infringement case, however, largely depends upon the strength of the prior art asserted.  This link between reexamination and the strength of prior art was much in evidence in Judge Rudolph Randa’s decision last week on competing motions to stay and for a preliminary injunction in Generac Power Systems v. Kohler, 2011 U.S. LEXIS 72817 (E.D. Wisc.)).

Generac sued Kohler last October for infringing U.S. Patent No. 7,230,345 related to a specific method of operating engine-driven electrical generators.  Kohler defended by filing a request for ex parte reexamination in December and a more robust request for inter partes reexamination at the end of February.  The PTO granted both requests for reexamination and might soon merge them.  Kohler also moved to stay the case pending completion of the reexamination proceedings.  In the meantime, Generac asked that Kohler be preliminarily enjoined from “making, using, selling [or] offering to sell generators that feature the method” of the ‘345 patent. 

Judge Randa addressed the stay motion first, but his primary interest was clearly directed to the request for preliminary relief.  The Judge first considered the likelihood that Generac would ultimately succeed on the merits.  Since Kohler “neither contested nor conceded infringement,” the sole issue on the merits was Kohler’s challenge to the validity of the ‘345 patent.  Kohler “must [therefore] put forth a ‘substantial question of validity’ to show that the claims at issue are vulnerable, [though] the showing of a substantial question of invalidity requires less proof than the clear and convincing standard to show actual invalidity” at trial (emphasis added). 

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